Ex Parte Kawakami

Patent Trial and Appeal BoardMar 31, 2017

11965879 (P.T.A.B. Mar. 31, 2017)

United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/965,879 12/28/2007 Tatsuya Kawakami SN-US075300 4227 22919 7590 04/04/2017 GLOBAL IP COUNSELORS, LLP David Tarnoff 1233 20TH STREET, NW Suite 600 WASHINGTON, DC 20036-2680 EXAMINER YABUT, DANIEL D ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 04/04/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mailpto @ giplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TATSUYA KAWAKAMI Appeal 2015-000139 Application 11/965,879 Technology Center 3600 Before LINDA E. HORNER, BRANDON J. WARNER, and JASON W. MELVIN, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tatsuya Kawakami (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—19, which are all the pending claims. Appeal Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on March 16, 2017. We REVERSE. 1 According to Appellant, the real party in interest is Shimano, Inc. Appeal Br. 3. Appeal 2015-000139 Application 11/965,879 CLAIMED SUBJECT MATTER Appellant’s disclosed invention “generally relates to a bicycle shift operating device,” and more specifically “relates to a bicycle shift operating device that includes a shifting unit with a single shift operating member that can be used for both winding and releasing a control wire.” Spec. 11. Claims 1, 6, 7, 17, and 18 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A bicycle shift operating device comprising: a base member; a shift wire take-up element rotatably mounted with respect to the base member in first and second rotational directions about a stationary pivot axis that is stationary with respect to the base member, with the shift wire take-up element having a center of rotation that is coincident with the stationary pivot axis as the shift wire take-up element rotates relative to the base member, and a shifting unit operably coupled to the shift wire take-up element, the shifting unit including a shift operating member pivotally mounted with respect to the base member along a pivotal movement path, the shift operating member operably engaging and moving the shift wire take-up element in the first rotational direction as the shift operating member pivots about an operating axis partially defined by a shift unit axle, the shift operating member being slidably mounted with respect to the base member along a non-pivotal movement path, the shift operating member operably engaging and moving the shift wire take-up element in the second rotational direction as the shift operating member moves with respect to the operating axis along the non-pivotal movement path, and the shift operating member sliding on the shift unit axle as the shift operating member moves along the non-pivotal movement path. 2 Appeal 2015-000139 Application 11/965,879 EVIDENCE The Examiner relies on the following evidence in rejecting the claims on appeal: Nagano US 5,203,213 Apr. 20, 1993 Wood GB 645,912 Nov. 8, 1950 REJECTIONS The following rejections are before us for review: I. Claims 1—19 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 2-4. II. Claims 1—6 and 11—19 stand rejected under 35 U.S.C. § 102(b) as anticipated by Wood. Id. at 4—11. III. Claims 7—10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wood and Nagano. Id. at 12—14. ANALYSIS Rejection I— Claims 1—19 as indefinite The Examiner determines that the claims are indefinite because they recite certain operable relationships between recited structural elements and “the particular structure that accomplishes [each] function is not recited in the claim(s).” Final Act. 2-4. Essentially, the Examiner takes the position that each of these identified recitations is an “unlimited function limitation” (Ans. 3), premised on an assertion that each is “a recitation of some structure . . . but does not recite the particular structure or materials that accomplish the function” {id. at 4—7). 3 Appeal 2015-000139 Application 11/965,879 Upon review of the claims, in light of the Specification, we agree with Appellant that “the so-called ‘functional’ claim limitations require specific structural relationships between the shift operating member, the base member, and the shift wire take-up element. Thus, these so-called ‘functional’ claim limitations are not ‘unlimited functional limitations’ that would render the claims indefinite.” Appeal Br. 14 (boldface omitted); see id. at 14—16. In other words, we agree with Appellant that “the claims clearly require structural elements such as a shift operating member, a base member, and a shift wire take-up element, and structural relationships between these structural devices,” as would be understood by one of ordinary skill in the art, sufficient to meet the definiteness requirement. Reply Br. 5. Thus, we do not sustain the rejection of claims 1—19 under 35 U.S.C. §112, second paragraph. Rejection II— Claims 1—6 and 11—19 as anticipated by Wood Independent claim 1 recites, in relevant part, “a shift wire take-up element rotatably mounted with respect to the base member in first and second rotational directions about a stationary pivot axis that is stationary with respect to the base member,” where the shift wire take-up element has “a center of rotation that is coincident with the stationary pivot axis as the shift wire take-up element rotates relative to the base member.'1'’ Appeal Br., Claims App. (emphasis added). Independent claims 6, 17, and 18 include substantially similar recitations. See id. In rejecting these independent claims, the Examiner relies on anchorage 33 of Wood as being a shift wire take-up element arranged as in 4 Appeal 2015-000139 Application 11/965,879 the claims. Final Act. 4—5, 6, 9, 10. Appellant persuasively asserts, however, that Wood does not disclose the claimed arrangement of a shift wire take-up member because “the center of rotation of the anchorage 33 (and of the entirety of the pawl 27) changes position as the anchorage 33 rotates relative to the base plate 10,” due to a combined angular and lateral sliding motion of pawl 27, such that anchorage 33 does not have “a center of rotation that is coincident with a stationary pivot axis ... as the anchorage 33 rotates relative to the base plate 103'' Appeal Br. 17 (boldface omitted; citing Wood, p. 4,11. 40-44); see id. at 17—18; Reply Br. 6—7. In the Answer, the Examiner takes the position that this claimed arrangement of a shift wire take-up member “is an inherent characteristic of Wood” because “it is conceivable” that Wood’s anchorage 33 could rotate in such a way that it would have a center of rotation that is coincident with a center of pivot 21. Ans. 7; see id. at 7—8. But, as Appellant correctly notes, “[ijnherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Reply Br. 6 (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)); see id. at 6—7; see also In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (an inherent characteristic must be inevitable, and not merely a possibility or probability). Therefore, we agree with Appellant that the Examiner’s reliance on inherency fails to establish a finding that Wood necessarily discloses a shift wire take-up member arranged as in the claims. Accordingly, based on the record before us—because an anticipation rejection requires a finding in a single reference of each and every limitation as set forth in the claims—we do not sustain the rejection of claims 1—6 and 11—19 under 35 U.S.C. § 102(b) as anticipated by Wood. 5 Appeal 2015-000139 Application 11/965,879 Rejection III— Claims 7—10 as unpatentable over Wood and Nagano Independent claim 7 recites, in relevant part, a shifting unit that includes a shift operating member that is both (1) “pivotally mounted with respect to the base member along a pivotal movement path” for operably engaging and moving a shift wire take-up element in a first rotational direction as the shift operating member pivots about an operating axis in the pivotal movement path, and (2) “slidably mounted with respect to the base member along a non-pivotal movement path” for operably engaging and moving the shift wire take-up element in a second rotational direction as the shift operating member moves with respect to the operating axis along the non-pivotal movement path, where the shifting unit also includes “<2 ratchet member mounted to rotate with the shift wire take-up element in response to the pivotal and non-pivotal movements of the shift operating member.'1'’ Appeal Br., Claims App. (emphasis added). In rejecting independent claim 7, the Examiner acknowledges that Wood does not disclose a ratchet member arranged as claimed, but turns to Nagano for teaching a ratchet member 2 that selectively engages a winding pawl 41 “for the purpose of effectively facilitating the transmission of pivotal movement of the shift wire take-up element.” Final Act. 13 (citing Nagano, col. 3,11. 24—28; col. 4,11. 12—21). The reason provided for incorporating the ratchet member and pawl from Nagano into the device of Wood is “for the purpose of effectively facilitating the transmission of pivotal movement of the shift wire take-up element,” which “would involve a simple substitution of one known element for another to obtain predictable results of transferring motion.” Id. at 13—14. 6 Appeal 2015-000139 Application 11/965,879 Appellant argues that the proposed modification to incorporate Nagano’s ratchet member and pawl into the device of Wood would not have been obvious because doing so “would have required a substantial reconstruction of Wood’s device.” Appeal Br. 21 (boldface omitted; citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)). For the reasons that Appellant explains (see Appeal Br. 20-23; Reply Br. 7—8), we agree that the proposed modification to Wood would not be a “simple substitution of one known element for another to obtain predictable results of transferring motion” (Final Act. 14; see Ans. 9-10), as stated by the Examiner. In particular, the Examiner has not adequately explained how such an alleged “simple substitution” would function, as Wood’s device includes pawl 27 that moves in multiple ways (both rotates and slides), whereas Nagano’s device has takeup wheel 2 that only rotates. See Reply Br. 7—8. Accordingly, based on the record before us, the Examiner has not met the burden of establishing a proper prima facie case of obviousness. On this basis, we do not sustain the rejection of claims 7—10 under 35 U.S.C. § 103(a) as being unpatentable over Wood and Nagano. DECISION We REVERSE the Examiner’s decision rejecting claims 1—19 under 35 U.S.C. § 112, second paragraph, as being indefinite. We REVERSE the Examiner’s decision rejecting claims 1—6 and 11—19 under 35 U.S.C. § 102(b) as anticipated by Wood. 7 Appeal 2015-000139 Application 11/965,879 We REVERSE the Examiner’s decision rejecting claims 7—10 under 35 U.S.C. § 103(a) as being unpatentable over Wood and Nagano. REVERSED 8